WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Phoenix Contact GmbH & Co. KG v. Whois Privacy Services Pty Ltd, Domain Hostmaster, Customer ID: 85520647450568 / Vertical Axis Inc., Domain Administrator

Case No. D2012-2014

1. The Parties

The Complainant is Phoenix Contact GmbH & Co. KG of Blomberg, Germany, represented by Blumbach Zinngrebe, Germany.

The Respondent is Whois Privacy Services Pty Ltd, Domain Hostmaster, Customer ID: 85520647450568 of Fortitude Valley, Queensland, Australia / Vertical Axis Inc., Domain Administrator of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pheonixcontact.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 19, 2012.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2012.

On November 16, 2012, the Complainant inquired via email with the Center about a procedural issue. The Center replied on the same date.

Further to a jointly executed request of suspension of the proceedings received by email on November 16, 2012, the Center suspended the proceedings on November 19, 2012. On December 13, 2012, the Complainant requested the reinstitution of the proceedings. The proceedings were reinstituted by the Center on December 14, 2012 and the new Response due date was specified as December 19, 2012. The Response was filed with the Center on December 19, 2012.

The Center appointed Adam Taylor as the sole panelist in this matter on January 9, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is incorporated in Germany and operates a business founded by the Complainant’s predecessor in 1923. The Complainant has traded under the name “Phoenix Contact” since 1982.

The Complainant’s group distributes a wide range of products in the field of industrial electro-technology. The Complainant supplies many industries including automotive, chemicals, energy and water, oil and gas, device manufacturers, telecommunications and transportation services.

The Complainant’s group has some 11,000 employees with a turnover of EUR 1.5 billion in 2011 with 30 sales partners worldwide.

The Complainant owns a number of registered trade marks for “Phoenix Contact” including the following:

- German trade mark no. 1104067 for the stylised words PHOENIX CONTACT in class 09, filed on April 16, 1982.

- International trade mark no. 511123, for the stylised words PHOENIX CONTACT in class 09, based on German trade mark No. 1104067, registered on May 8, 1987 and designated in DZ (Algeria), AT (Austria), BX (Benelux), CH (Switzerland), EG (Egypt), ES (Spain), FR (France), HR (Croatia), HU (Hungary), IT (Italy), LI (Liechtenstein), MA (Morocco), PT (Portugal), RO (Romania) and SK (Slovakia).

- International trade mark no. 677440, for the stylised words PHOENIX CONTACT in class 09, based on German trade mark no. 1104067, registered on June 7, 1997 and designated in IS (Iceland), AL (Albania), BA (Bosnia and Herzegovina), BY (Belarus), CN (China), LR (Liberia), LV (Latvia), MK (the former Yugoslav Republic of Macedonia), PL (Poland), UA (Ukraine).

- Community trade mark no. 004894085 for the stylised words PHOENIX CONTACT in classes 06, 08 and 09, filed on February 7, 2006.

- International trade mark no. 915274, for the stylised words PHOENIX CONTACT in classes 08 and 09, based on Community trade mark no. 004894085, registered on December 15, 2006 and designated in AG (Antigua and Barbuda), AM (Armenia), BG (Bulgaria), BH (Bahrain), CU (Cuba), GE (Georgia), KE (Kenya), KG (Kyrgyzstan), MC (Monaco), MD (Republic of Moldova), MN (Mongolia), MZ (Mozambique), NA (Namibia), RU (Russian Federation), SY (Syrian Arab Republic), TM (Turkmenistan), UA (Ukraine), VN (Viet Nam), ZM (Zambia), JP (Japan), KR (Republic of Korea), RS (Serbia).

The Complainant’s main website is at ‘‘www.phoenixcontact.com’’.

The disputed domain name was registered on August 28, 2005.

As an unspecified date, the Respondent used the disputed domain name for a website with sponsored links to websites relating to animals and pets.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

As a result of its use for approximately 30 years, the Complainant’s unregistered mark PHOENIX CONTACT has developed extensive fame and goodwill.

The disputed domain name is confusingly similar to the Complainant’s trade mark. The disputed domain name is almost identical except that the two letters “oe” have been transposed into “eo” and that the two words “Pheonix” and “Contact” are presented as one word.

The transposing of the two letters is a typical typing mistake whereby Internet users accidentally misspell the diphthong “oe” as “eo”.

These small differences between the disputed domain name and the trade mark do not attribute a distinctive character to the disputed domain name. On the contrary, these small differences give rise to confusing similarity because of their insignificance in the perception of the relevant public.

Rights or Legitimate Interests

It does not seem that the Respondent has trade mark rights in the disputed domain name nor does it seem that the Respondent is commonly known under the disputed domain name.

It is very unlikely that a person or organization is named by or is known under the name “Pheonixcontact”, a term in which the typical diphthong “oe” of “Phoenix” is transposed into “eo” and thereby deliberately changed into an incorrect form.

The Complainant has no relationship with a person or company named “Pheonixcontact” or “Pheonix Contact” or with the Respondent and has not authorized or otherwise permitted any person or organization to use the disputed domain name.

As the name of the Respondent is now revealed as Vertical Axis, Inc., it is obvious that by doing business under a completely different name compared to the disputed domain name the Respondent has no unregistered rights in the term “Pheonix Contact”.

The Respondent does not appear to be using the disputed domain name in connection with a bona fide offering of goods and services or to be making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers.

Firstly, the disputed domain name was registered some 23 years after the Complainant started using its trade mark.

Given the prominent position of the Complainant in the market of connector products, the extensive reputation of the Complainant and its long history of use of its name, it seems likely that the Respondent had actual knowledge of the Complainant’s company name and trade marks when registering the disputed domain name.

The Respondent is using the Complainant’s reputation by using a typing error in order to confuse Internet users who intend to visit the website of the Complainant at ‘‘www.phoenixcontact.com’’. This is not a bona fide offering of goods or a legitimate use of the disputed domain name.

The content of the website connected with the disputed domain name indicates that the Respondent seeks to capitalize on the typing errors of consumers.

This is not a bona fide offering of goods and services, nor is it a legitimate noncommercial or fair use of the disputed domain name.

Additionally, the Respondent wishes to sell the disputed domain name as each page includes a header stating: “This domain is listed at DomainBrokers.com” and “Click here to inquire”. After having clicked on this link, the user is invited to register in order to create an account and make an offer to purchase the disputed domain name.

There are no other circumstances that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

Registered and Used in Bad Faith

The disputed domain name was registered and is being used in bad faith.

First, registering the disputed domain name 23 years after the Complainant started using its trade mark indicates that the Respondent had actual knowledge of the Complainant’s trade marks and website at the time of registration. Such actual knowledge alone is evidence of bad faith.

Second, the Respondent uses an intentional misspelling of the Complainant’s trade mark with the intent to intercept and divert traffic from its intended destination. Therefore, this is a typical case of typosquatting. As many UDRP panels have previously decided, typosquatting is inherently parasitic and of itself evidence of bad faith.

Furthermore, the Respondent seeks to sell the disputed domain name for a price by far exceeding its out of pocket expenses. On November 28, 2011, the Complainant’s representatives offered USD 1,300 through the contact form presented via the link on the Respondent’s site. After having inserted the offer, an automatic reply immediately appeared in which a price of at least USD 8,000 was claimed.

B. Respondent

The Respondent denies that it registered the disputed domain name in bad faith. The Respondent registered this disputed domain name when it expired and became available for registration.

The Respondent states that on November 14, 2012, the Respondent advised the Complainant’s counsel that it would transfer the disputed domain name to the Complainant. The parties exchanged settlement documents and the proceedings were suspended. After a few email exchanges the parties appeared to have reached a final agreement. On December 12, 2012, without explanation, the Complainant reinstituted the proceeding.

The Respondent does not wish to waste the Center’s resources and again reiterates its willingness to transfer the disputed domain name. The Respondent had no intent to target the Complainant or improperly use its trade mark when it registered the disputed domain name, the Respondent did not register the disputed domain name with the Complainant’s trade mark in mind, and never intended to target or profit from the Complainant’s trade mark.

Nevertheless, in the interest of saving the cost involved in defending its rights to the disputed domain name, the Respondent stipulates for the Panel to transfer the disputed domain name to the Complainant. Where a respondent stipulates to transfer a domain name to a complainant, the panel may immediately transfer the domain name, without issuing an opinion on the merits of the case per Texas Medical Center v. Joseph Spinder, NAF Claim No. 0886496 (“where Respondent has agreed to transfer, the Panel may decide to forego the traditional UDRP analysis and order the immediate transfer of the domain names”).

In Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg,WIPO Case No. D2006-1336, the panel held that where a respondent stipulates to a transfer of a domain name, a panel should immediately transfer a domain name without discussion of the merits of the case. The panel explained:

“This Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course.”

The Respondent refers also to Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Claim No. 0212653 (“In this case, the parties have both asked for the domain name to be transferred to the Complainant ... Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); Disney Enterprises, Inc. v. Elmer Morales, NAF Claim No. 0475191 (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). The Respondent refers also to The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207; and Boehringer Ingelheim International GmbH v. Modern Limited- Cayman Web Development, NAF Claim No. 0133625.

6. Discussion and Findings

A. Consent to Remedy

The Response consists of a blanket denial of bad faith plus a “stipulation” to transfer of the disputed domain name to the Complainant.

Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) considers whether a UDRP panel can decide a case based on a respondent’s consent to transfer:

“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent’s consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent’s consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”

The Panel has considered the cases cited by the Respondent but has decided to proceed to a substantive determination on the basis of a number of the countervailing factors mentioned in paragraph 4.13 of the WIPO Overview 2.0, in particular the fact that the Complainant has not agreed to a consent decision and is entitled to a decision for which it has paid in filing the Complaint. The Panel is also persuaded that there is a broader interest in reaching and recording a substantive determination so that the conduct of the Respondent, if found to have registered and used the disputed domain name in bad faith, can be taken into account by other future UDRP panels, e.g., in connection with assessment of patterns of conduct under paragraph 4(b)(iii) of the Policy.

B. Identical or Confusingly Similar

The Complainant undoubtedly has rights in the mark PHOENIX CONTACT by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive, worldwide use of those names over many years.

The disputed domain name differs from the trade mark only by inversion of the letters “o” and “e”. This is an obvious misspelling. Paragraph 1.10 of the WIPO Overview 2.0 explains the consensus view that “[a] domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”

The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links to animal and pet-related websites. Such use of the disputed domain name in the Panel’s opinion could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:

“Panels have generally recognized that use of a domain name to post parking and parking pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” … As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value ... By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”

While one can discern a connection between the phoenix, a mythical bird, and sponsored links to animal and pet-related websites, the Panel does not consider that there has been a use of PPC links genuinely related to the generic meaning of the disputed domain name given that the disputed domain name contains a misspelling, and adds the word “contact”, not an obvious word to associate with a phoenix. Accordingly, the Panel does not consider that this use of the disputed domain name constitutes a bona fide offering of goods or services.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of the Respondent’s rights or legitimate interests in the disputed domain name and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind. It is difficult to conceive of any plausible reason for combining the words “phoenix” and “contact” other than in connection with the Complainant’s trade mark, still less to use a misspelling of “phoenix”. The Respondent has not attempted to put forward any form of explanation or justification for its registration of the disputed domain name, beyond saying that the disputed domain name had previously expired and become available for registration.

Accordingly, under the circumstances described above, the Panel concludes that the Respondent registered the disputed domain name in bad faith.

The Panel also considers that the Respondent has used the disputed domain name in bad faith.

In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, involving an obvious misspelling of the Complainant’s trade mark, in connection with a parking page, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

It is true that the parking page consists of links to animal / pet-related websites and not sites relating to the type of products produced by the Complainant. This may or may not have been an attempt by the Respondent to give the (false) impression that the disputed domain name was registered for generic purposes in connection with the mythical phoenix. In any case, it makes no difference that users arriving at the Respondent’s site are likely to realize that the site is not connected with the Complainant. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the Respondent used the disputed domain name to create “initial interest confusion” on the part of Internet users seeking the Complainant and in order to profit from at least some of that traffic. See, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net,WIPO Case No. D2000-0118 and Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and in accordance with the remedy sought by the Complainant, the Panel orders that the disputed domain name <pheonixcontact.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: January 22, 2013